Appeal No. 96-4017
Application 08/217,544
The proper test for obviousness is what the combined
teachings of the references would have suggested to those having
ordinary skill in the art. See Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-887 (Fed.
Cir. 1985); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). The law followed by our court of review,
and thus by this Board, is that "[a] prima facie case of
obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art." In re Rinehart, 531
F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). A rejection
based on § 103 must rest on a factual basis, with the facts being
interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, the examiner has
the initial duty of supplying the factual basis for the rejec-
tion he/she advances. The examiner may not, because he/she
doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d
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